Patent Law Practice Center

Prosecuting Patent Applications: Establishing Unexpected Results

Today’s guest post was written by Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP.

The purpose of this article is to provide suggestions on how to effectively make a showing of unexpected results during prosecution before the U.S. Patent and Trademark Office in order to overcome a rejection based on obviousness under 35 U.S.C. §103(a).

I. General Comments

“One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward – that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). (more…)

Hyatt v. Kappos: The En Banc Decision Makes Section 145 Actions More Attractive

The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor).

Two weeks ago, the Federal Circuit handed down an en banc decision in Hyatt v. Kappos overruling a panel decision and substantially changing the rules for admitting evidence in a §145 action.  Although the decision has not attracted much attention, Hyatt may make §145 actions substantially more attractive and meaningfully alter the strategic landscape for those applicants who wish to pursue their claims beyond a BPAI rejection.

After an applicant’s claims are rejected by the BPAI, the applicant has two basic options—either appeal the  decision to the Federal Circuit, or bring an action in district court under 35 U.S.C. §145.  If the applicant elects to appeal the decision to the Federal Circuit, the appeal is heard on the administrative record created by the PTO and pursuant to the substantial deference standard normal in judicial review of expert administrative proceedings.  In a §145 proceeding, however, some new issues can be raised and (prior to Hyatt) some new evidence could be submitted to the district court. (more…)

Federal Circuit Keeps Door Open For New Evidence In Section 145 Actions

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent along an article she wrote with colleagues, Stephen B. Maebius and Courtenay C. Brinckerhoff discussing the  recent Federal Circuit decision in the Hyatt v. Kappos en banc re-hearing.

On Monday, November 8, 2010, the Federal Circuit issued its decision in the en banc re-hearing of Hyatt v. Kappos (No. 2007-1066)). The en banc Court departed from the August 11, 2009 panel decision and held that a patent applicant may introduce new evidence against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”) provided such evidence relates to issues that were raised before the USPTO. This decision will be welcomed by patent applicants who have received negative USPTO decisions on patentability, and reflects the realities—and difficulties—of marshalling evidence during patent prosecution. For additional background on the appeal, see Hyatt v. Kappos: Will a Bad Case Make Bad Law?.

The Panel Decision

After the USPTO Board of Patent Appeals and Interferences affirmed certain rejections of his patent application claims, Mr. Hyatt filed an action in the U.S. District Court for the District of Columbia under 35 USC § 145. To support his claim for a patent, Mr. Hyatt submitted a declaration to address the rejections. The district court granted the USPTO’s motion to exclude the declaration because Mr. Hyatt had been negligent in not submitting it during the USPTO proceedings. (more…)

Bilski’s Impact on Finance Industry Patents

The following was written by Dale Lazar (Partner at DLA Piper and one of our newest Practice Center Contributor’s)  and Jim Heintz (Partner at DLA Piper).

When the Supreme Court announced it would hear the Bilski case, many speculated that the Court would use the opportunity to declare an end to patents on business methods. This did not happen. However, the Court did find that Bilski’s claims to a method for hedging risk were not the kind of invention for which a patent should be granted.

What does this mean for other finance industry patents and patent applications? Certain types of business method patents may be safe for now – but warning signs point to hazards down the road.

Most would agree that the claims of Bilski’s patent application are directed toward a business method. Two aspects of the Supreme Court’s Bilski decision are particularly important to the issue of whether finance industry inventions can be protected by patents: (1) business methods are not categorically excluded from patent protection; but (2) Bilski’s claims to methods for hedging risk are unpatentable because they claim an “abstract idea.” (more…)

Article Of Manufacture Claims for Software Inventions: Should They Be Included in Your Patent?

Burt Magen, partner at Vierra Magen Marcus & Deniro LLP and Practice Center Contributor passed along this article he wrote entitled Article of Manufacture Claims for Computer Related Inventions.  According to Magen, article of manufacture claims can offer advantages over apparatus and process claims, including providing an easier mechanism for enforcement of the patent.  With the knowledge provided in his article, Magen says, “patent practitioners can efficiently draft appropriate article of manufacture claims to more effectively protect software inventions.”  Here is the Introduction:

The software industry is growing and becoming more important to the global economy.  As a result, the number of software patent applications has increased dramatically.  To maximize the value of software patents, it is important that the claims of such patents properly protect the invention.  Typically, software patents include apparatus claims, method claims, and/or article of manufacture claims.  Because of the nature of the software industry, for some inventions the article of manufacture claims may be the most important class of claims.  Yet, many software patents do not include article of manufacture claims or include an incomplete set of article of manufacture claims as an afterthought. (more…)